Ex Parte Simmen

Board of Patent Appeals and Interferences

Jul 19, 2010

09669556 (B.P.A.I. Jul. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/669,556 09/26/2000 David E. Simmen ST9-99-184 4709
45729 7590 07/19/2010
GATES & COOPER LLP
6701 CENTER DRIVE WEST
SUITE 1050
LOS ANGELES, CA 90045
EXAMINER
NGUYEN, CINDY
ART UNIT PAPER NUMBER
2161
MAIL DATE DELIVERY MODE
07/19/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE and
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID E. SIMMEN
____________

Appeal 2008-006140
Application 09/669,556
Technology Center 2100
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
JAY P. LUCAS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL1

I. STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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The Patent Examiner rejected claims 1, 3-11, 13-21, and 23-30. The
Appellant appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part.

A. INVENTION
The invention at issue on appeal relates “in general to database
management systems performed by computers, and in particular, to a query
optimization technique for obtaining improved cardinality estimates using
statistics on automatic summary tables.” (Spec. 1.)

Appellant further describes their invention as:

a technique is provided for optimizing execution of a query
that accesses data stored on a data store connected to a
computer. Statistics on one or more automatic summary tables
are used to determine an optimal query execution plan for the
query. In particular, improved cardinality estimates are
generated for one or more query execution plans for the query
using statistics of one or more automatic summary tables that
vertically overlap the query. These cardinality estimates are
used to make more accurate cost estimates, thus improving the
likelihood of determining the optimal query execution plan.

(Spec. 3.)

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. A method of optimizing execution of a query that accesses data
stored on a data store connected to a computer, comprising:
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generating cardinality estimates for one or more query
execution plans for the query using statistics of one or more automatic
summary tables that vertically overlap the query;

using the generated cardinality estimates to determine an
optimal query execution plan for the query; and

executing the optimal query execution plan for the query in
order to access the data stored on the data store connected to a
computer and then output[ ] the accessed data.

C. REFERENCES
The Examiner relies on the following references as evidence:

Bello US 6,496,819 B1 Dec. 17, 2002
(filed Dec. 29, 1998)

Zaharioudakis US 2003/0088558 A1 May 8, 2003

D. REJECTIONS

Claims 1, 3-4, 11, 13-14, 21, and 23-24 stand rejected under 35 U.S.C.
102(e) as being anticipated by Zaharioudakis.

Claims 5-10, 15-20, 25-30 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over Zaharioudakis in view of Bello.

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II. ISSUE
Has the Examiner set forth a proper rejection based on the
anticipation? Specifically, is Zaharioudakis a proper prior art reference
under 35 U.S.C. § 102 and contain a sufficient disclosure under 35 U.S.C. §
112, first paragraph?

III. PRINCIPLES OF LAW
35 U.S.C. § 102
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). Analysis of whether a
claim is patentable over the prior art under 35 U.S.C. § 102 begins with a
determination of the scope of the claim. We determine the scope of the
claims in patent applications not solely on the basis of the claim language,
but upon giving claims their broadest reasonable construction in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The
properly interpreted claim must then be compared with the prior art.
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations and internal quotation marks omitted). "Inherency,
however, may not be established by probabilities or possibilities. The mere
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fact that a certain thing may result from a given set of circumstances is not
sufficient." In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations
and internal quotation marks omitted).

35 U.S.C. § 103
Obviousness requires that all limitations be taught or suggested by the
reference or references. 35 U.S.C. § 103(a).

VI. ANALYSIS
Appellant’s main contention is that Zaharioudakis is not a valid prior
art reference due to the lack of compliance with 35 U.S.C. § 112, first
paragraph, of its priority document (provisional application serial number
60/135,133, filed on May 20, 1999). (App. Br. 5-6). Appellant further
argues that the Examiner is improperly introducing a new ground of
rejection based upon provisional application by referencing portions thereof
in an Advisory Action. (App. Br. 7). Here, we find the Examiner's late
reliance upon the teachings of Zaharioudakis in the final rejection (due to
Appellant's claim amendments) to be proper, and we find the priority
document to be properly identified on the face of the Zaharioudakis patent
where Appellant could have found the relevant dates of Zaharioudakis, and
evaluated the propriety of Zaharioudakis. Therefore, we find Appellant's
argument of a new ground of rejection unpersuasive.
Appellant argues that there is a "lack of identity" between paragraph
[0043] of Zaharioudakis and the cited portions of provisional application
serial number 60/135,133. Appellant argues that since paragraph [0043] of
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Zaharioudakis cannot be found, then Zaharioudakis is not entitled to the
filing date of the provisional application or any date earlier than of
November 5, 2002. (App. Br. 9). We disagree with Appellant, and find that
a determination of a "lack of identity" is not an appropriate test and is not an
‘ipsissimis verbis’ test for support. We find adequate support in the
identified portions of the priority document for those portions relied upon by
the Examiner to support paragraphs [0031], [0041], and [0043] of
Zaharioudakis.
Appellant maintains that paragraphs [0031], [0041], and [0043] of
Zaharioudakis contain no discussion of "generating cardinality estimates for
query execution plans for the query using statistics of automatic summary
tables that vertically overlap the query." (App. Br. 9). Appellant maintains
that nowhere do paragraphs [0031], [0041], and [0043] of Zaharioudakis
describe maintaining "such statistics" were using "such statistics" to
optimize queries. (App. Br. 9-10). Here, we find Appellant's argument is
unpersuasive wherein the structure of the automatic summary tables and the
vertical overlap thereof in the query are only inferentially recited to describe
Appellant's "such statistics." Furthermore, as Appellant has argued the
limitation, the description of the statistics is further deemed to be non-
functional descriptive material since that it does not affirmatively identify
any structure of the data, but only impliedly modifies statistics.
We disagree with Appellant’s contention and find that Appellant's
claim language does not specifically identify any details of the statistics or
the use thereof in the step of generating cardinality estimates for one or more
query estimation plans for the query using statistics. We find that the relied
upon teachings of Zaharioudakis as discussed at pages 9-10 of the Answer to
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meet the disputed claim language. Appellant sets forth no arguments in the
Reply Brief for independent claim for 1, 11, and 21. Since we find no
persuasive arguments of error in the Examiner's reasoned conclusion of
anticipation, we sustain the rejection of independent claim 1. Since
Appellant elected to group independent claims 11 and 21 with independent
claim 1 and Appellant has set forth no separate arguments for patentability,
we sustain rejection of independent claims 11 and 21.
With respect to dependent claim 3, Appellant contends that paragraph
[0041] of Zaharioudakis "says nothing about . . ." and repeats the language
of independent claim 1 and dependent claim 3. We find Appellant's
contention to fall short of an argument which specifically identifies
differences between the prior art and the claimed invention. Therefore, we
find Appellant's contention to be unpersuasive of error in the Examiner's
reasoned conclusion of anticipation, and we will sustain the rejection of
representative dependent claim 3 and claims 13 and 23 group therewith.
With respect to dependent claims 4, 14, and 24, Appellant relies on
the same argument advanced with respect to claim 3 which we found
unpersuasive, and we sustain rejection of these claims.

35 U.S.C. § 103
With respect to dependent claim 5, Appellant again reiterates the
argument that Zaharioudakis is not a prior art reference. Since we did not
find Appellant's argument above persuasive, we again do not find it
persuasive.
Appellant further argues that "the query reduction factor is not the
same as the selectivity estimate, which comprises a ratio of the cardinality of
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the automatic summary table to the product of cardinalities of base tables
referenced in the automatic summary table and the query. Instead, these are
completely different values." (Reply Br. 3).
We agree with Appellant and find that the Examiner has not shown
that Bello teaches this claimed limitation as asserted at pages 5 and 10-12 of
the Answer. Therefore, we cannot sustain the Examiner's rejection of
dependent claim 5 and corresponding claims 15 and 25.
With respect to dependent claim 6, the Appellant merely repeats the
language of dependent claim 6 and maintains that neither Zaharioudakis nor
Bello disclosed is limitations (App. Br. 12-13; Reply Br. 3-4). Appellant
argues that the Examiner’s newly cited portions of Bello "does not include a
determination whether zero or more predicates of the query are applied by
one of the automatic summary tables and the remaining predicates of the
query are eligible to be applied on the automatic summary table. Instead,
these are completely different determinations." (Reply Br. 4). Appellant's
argument is not commensurate with the scope of the language of dependent
claim 6 wherein there is no "determination" made. Furthermore, the
language of dependent claim 6 merely states "wherein zero or more
predicate acts of the query are applied to one of the automatic summary
tables . . . " and this language is met when no predicates of the query are
applied to the automatic summary table and the remaining predicates are
applied. Therefore, we find Appellant's argument to be unpersuasive of the
error in the Examiner’s reasoned conclusion of obviousness, and we will
sustain rejection of dependent claim 6 and dependent claim 16 and 26 which
are grouped therewith by Appellant since no separate arguments for
patentability have been presented.
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With respect to dependent claims 7, 17, and 27, Appellant repeats the
claim language and states that the claims stand or fall with claim 6. Since
we did not find the arguments for dependent claim 6 to be persuasive, we
sustain the rejection of dependent claims 7, 17, and 27.
With respect to dependent claim 8, Appellant merely repeats the
language of the claim and maintains that nothing in the cited portion of Bello
teaches or suggests the claimed limitation (App. Br. 13; Reply Br. 5), but
Appellant does not specifically identify any error in the Examiner's reasoned
conclusion of obviousness. Therefore, we will sustain the rejection of
representative dependent claim 8 and claims 18 and 28 group therewith.
With respect to dependent claims 9 and 10, as discussed previously
with respect to dependent claim 5, we find the teachings of Bello as
discussed at pages 12-13 of the Answer to fall short of the required showing
for obviousness of the claimed invention for this claim limitation. We
cannot sustain the Examiner's proffered rejection since we do not find
teachings or fair suggestions of the claimed invention. Therefore, we cannot
sustain the rejection of claims 9, 10, 19, 20, 29, and 30.

V. CONCLUSION
For the aforementioned reasons, Appellant has shown error in the
Examiner’s obviousness rejection of claims 5, 9, 10, 15, 19, 20, 25, 29, and
30, but not shown error in the remainder of the anticipation and obviousness
rejections.
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VI. ORDER
We affirm the anticipation rejection of claims 1, 3, 4, 11, 13, 14, 21,
23, and 24. We affirm the obviousness rejections of claims 6, 7, 8, 16, 17,
18, 26, 27, and 28. We reverse the obviousness rejections of claims 5, 9, 10,
15, 19, 20, 25, 29, and 30 .

AFFIRMED-IN-PART

erc

GATES & COOPER LLP
6701 CENTER DRIVE WEST
SUITE 1050
LOS ANGELES, CA 90045